USPTO Patents Application 09871134

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United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office

Address: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria, Virginia 223 1 3- 1 450
www.usplo.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

09/871,134

05/31/2001

Scott C. Johnson

SURG: 158

2124

7590

08/06/2004

Richard D. Egan

O'KEEFE, EGAN & PETERMAN

Building C, Suite 200

1101 Capital of Texas Highway South

Austin, TX 78746

EXAMINER

PATEL, NIKETA I

ART UNIT

PAPER NUMBER

2182

DATE MAILED: 08/06/2004

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

Application No.

09/871,134

Applicant(s)

JOHNSON ET AL

Examiner

Niketa I. Patel

Art Unit

2182

~ The MAILING DATE of this communication appears on the cover sheet with the correspondence address -
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .1 36(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).

Status

Responsive to communication(s) filed on 10 May 2004 .
2a)D This action is FINAL. 2b)^ This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.

Disposition of Claims

4) ^ Claim(s) 133-214 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) D Claim(s) is/are allowed.

6) E| Claim(s) 133-214 is/are rejected.

7) D Claim(s) is/are objected to.

8) D Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) Q The specification is objected to by the Examiner.

10) [3 The drawing(s) filed on 31 May 2004 is/are: a)^ accepted or b)D objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).

1 1) D The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 119

12) D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
a)D All b)Q Some * c)D None of:

1 .D Certified copies of the priority documents have been received.

2. Q Certified copies of the priority documents have been received in Application No. .

3. D Copies of the certified copies of the priority documents have been received in this National Stage

application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attachment(s)

1) ^ Notice of References Cited (PTO-892) 4) O Interview Summary (PTO-41 3)

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) Pa P er No(s)/Mail Date. .

3) Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08) 5 ) □ Notice of Informal Patent Application (PTO-152)
Paper No(s)/Mail Date ^jl jo !L ^ O^l) fo^ 6 ) d otner: •

U.S. Patent and Trademark Office

PTOL-326 (Rev. 1-04) Office Action Summary Part of Paper No./Mail Date 07212004

Application/Control Number: 09/871,134
Art Unit: 2182

Page 2

DETAILED ACTION
Double Patenting

1. The nonstatutory double patenting rejection is based on a
judicially created doctrine grounded in public policy (a policy
reflected in the statute) so as to prevent the unjustified or
improper timewise extension of the "right to exclude" granted by
a patent and to prevent possible harassment by multiple
assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010
(Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed.
Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA
1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970) ;and,
In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).

A timely filed terminal disclaimer in compliance with 37
CFR 1.321(c) may be used to overcome an actual or provisional
rejection based on a nonstatutory double patenting ground
provided the conflicting application or patent is shown to be
commonly owned with this application. See 37 CFR 1.130(b).

Effective January 1, 1994, a registered attorney or agent
of record may sign a terminal disclaimer. A terminal disclaimer
signed by the assignee must fully comply with 37 CFR 3.73(b).

2. Claims 133, 134-145, 147-150 and 152-214 are provisionally
rejected under the judicially created doctrine of obviousness-
type double patenting as being unpatentable over claims 1, 3-32,
71-100 and 115-132 of copending Application No. 09/797,413.
Although the conflicting claims are not identical, they are not
patentably distinct from each other because they recite system,
means or steps that are substantially the same and that would
have been obvious to one of ordinary skill in the art.

This is a provisional obviousness-type double patenting
rejection because the conflicting claims have not in fact been

patented.

Application/Control Number: 09/871,134
Art Unit: 2182

Page 3

3. A later patent claim is not patentably distinct from an
earlier patent claim if the later claim is obvious over, or
anticipated by, the earlier claim. In re Longi , 759 F.2d at
896, 225 USPQ at 651 (affirming a holding of obviousness-type
double patenting because the claims at issue were obvious over
claims in four prior art patents); In re Berg , 140 F.3d at 1437,
46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of
obviousness-type double patenting where a patent application
claim to a genus is anticipated by a patent claim to a species
within that genus) . ELI LILLY AND COMPANY v BARR LABORATORIES,
INC., United States Court of Appeals for the Federal Circuit, ON
PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001.)

Claim R&jectlons - 35 USC §102

4. The following is a quotation of the appropriate paragraphs
of 35 U.S.C. 102 that form the basis for the rejections under
this section made in this Office action:

A person shall be entitled to a patent unless -

(e) The invention was described in (1) an application for patent, published
under section 122 (b) , by another filed in the United States before the
invention by the applicant for patent or (2) a patent granted on an
application for patent by another filed in the United States before the
invention by the applicant for patent, except that an international
application filed under the treaty defined in section 351(a) shall have the
effects for purposes of this subsection of an application filed in the
United States only if the international application designated the United

Application/Control Number: 09/87 1,134 Page 4

Art Unit: 2182

States and was published under Article 21(2) of such treaty in the English
language .

5. Claims 133-214 are rejected under 35 U.S.C. 102(e) as being
anticipated by Krause U.S. Patent Number 6,718,392 (hereinafter
referred to as "Krause".)

6. Referring to claim 133, Krause teaches a data storage
system, comprising: at least one system processor comprising a
storage processor [see figure 1 - element 52] ; a system
interface connection configured to be coupled to a network [see
figure 1 - elements 46,36]; at least one network processor, the
network processor coupled to the system interface connection to
receive data form the network [see figure 1 - elements 42, 36,
38]; and an interconnection between the system processor and the
network processor so that the network processor may analyze data
provided from the network and process the data at least in part
and then forward the data to the interconnection so that other
processing may be performed on the data within the system so
that storage system functionality may be accomplished [see
column 4 - lines 49-67 and column 5 - lines 1-34.]

7. Referring to claims 134, 186, Krause teaches further
comprising an application processor [see figure 1 - element 44.]

8. Referring to claims 135, 156, 163, Krause teaches wherein
the system comprises a plurality of system processors configured

Application/Control Number: 09/871 ,134 Page 5

Art Unit: 2182

as an asymmetric multi-processor system [see figure 1 - element
30 and column 4 - lines 13-24,]

9. Referring to claims 136, 154, 161, 168, 175, 179, 189,

Krause teaches wherein the system comprises a plurality of
processors communication in a peer to peer environment [see
figure 1 - elements 44, 42 and column 9 - lines 23-35.]

10. Referring to claims 137, 155, 162, 171, 180, 185, 195, 137,

Krause teaches wherein the plurality of processor comprises the
network processor and the system processor [see figure 1 -
elements 44, 42, 52.]

11. Referring to claims 138, 173, 188, 193, 194, Krause teaches
wherein the plurality of processors comprises the network
processor and multiple system processors [see figure 1 -
elements 44, 42, 52.]

12. Referring to claims 139, 158, 178, 139, Krause teaches
wherein the multiple system processors comprises a storage
processor and an application processor [figure 1 - elements 44,
42, 52.]

13. Referring to claims 140, 157, 169, 176, Krause teaches
wherein the interconnection comprises a distributed
interconnection [figure 1 - elements 36 42 and column 4 - lines
13-24.]

Application/Control Number: 09/87 1,134 Page 6

Art Unit: 2182

14. Referring to claims 141, 165, 170, 177, 190, 191, Krause
teaches wherein the distributed interconnection comprises a
switch fabric [figure 1 - element 36.]

15. Referring to claim 142, Krause teaches wherein the
interconnection comprises a distributed interconnection [figure
1 - elements 36 42 and column 4 - lines 13-24.]

16. Referring to claim 143, Krause teaches wherein the
distributed interconnection comprises a switch fabric [figure 1
- element 36 . ]

17. Referring to claim 144, Krause teaches further comprising a
storage device coupled to the storage processor [see figure 1 -
element 52 . ]

18. Referring to claim 145, Krause teaches wherein the
interconnection comprises a switch fabric [figure 1 - element
36.]

19. Referring to claim 146, 151, Krause teaches further
comprising a storage device coupled to the storage processor
[see figure 1 - element 33, 'RAID Subsystem'.]

20. Referring to claims 147, 164, Krause teaches wherein the
network processor filters data incoming to the data storage
system from the network [see column 4 - lines 4 9-67 and column
15- lines 41-67 and column 16 - lines 1-6.]

Application/Control Number: 09/87 1 ,134 Page 7

Art Unit: 2182

21. Referring to claim 148, Krause teaches the network
processor enabling accelerated system performance [see column 4

- lines 49-67.]

22. Referring to claims 149, 159, Krause teaches the data
storage system being a content delivery system [column 4 - lines
49-67.]

23. Referring to claims 150, 160, 166, Krause teaches the data
storage system providing accelerated content delivery [column 4

- lines 49-67.]

24. Referring to claim 151, Krause teaches further comprising a
storage device coupled to the storage processor [see figure 1 -
element 33, 'RAID Subsystem' . ]

25. Referring to claim 152, Krause teaches a method of
operating a data storage system, the method comprising:
providing a network processor within the data storage system
[see figure 1 - elements 42, 36, 38], the network processor
being configured to be coupled to an interface which couples the
data storage system to a network [see figure 1 - elements 42,
36, 38, 38]; processing data passing through the interface with
the network processor [see column 4 - lines 49-67 and column 5

- lines 1-34]; and forwarding data from the network processor to
a system processor which then performs at least some data

Application/Control Number: 09/871 ,134 Page
Art Unit: 2182

storage system functionality upon the data [see column 4 -
lines 49-67 and column 5 - lines 1-34.]

26. Referring to claim 153, Krause teaches wherein the network
processor analyzes headers of data packets transmitted to the
data storage system from the network [see column 4 - lines 49-
67 and column 5 - lines 1-34.]

27. Referring to claim 167, Krause teaches a method of
providing a data storage system through the use of a network
connect able computing system, comprising : providing a plurality
of separate processor engine, the processor engines being
assigned separate task in an asymmetrical multi-processor
configuration [see figure 1 - elements 44, 52, 42 and column 4 -
lines 13-24]; providing a storage processor engine, the storage
processor engine being one of the plurality of separate
processor engines [see figure 1 - element 52 ] ; providing a
network interface connection to at least one of the processor
engines to couple the data storage system to a network [see
figure 1 - elements 42, 36, 38 ]; providing a storage interface
connection to the storage processor engine to couple the storage
processor engine to storage device [see figure 1 - element 33,
'RAID']; and accelerating content delivery through the data
storage system [column 4 - lines 49-67.]

Application/Control Number: 09/87 1,134 Page 9

Art Unit: 2182

28. Referring to claims 172, 174, 198, 199, 201, 202, Krause
teaches further comprising performing look ahead processing
within the network processor to off-load processing tasks form
the other processor engines [column 4 - lines 49-67.]

29. Referring to claims 180, 181, Krause teaches further
comprising tracking system performance within the system
management processor engine [see figure 1 - element 34b, A host
processor' and column 4 - lines 40-67.]

30. Referring to claims 183, 197, Krause teaches a network
connectable content delivery system, comprising: a first
processor engine [see figure 1 - elements 44, 52, 42 and column
4 - lines 13-24]; a second processor engine, the second
processor engine being assigned types of tasks different from
the types of tasks assigned to the first processor engine [see
figure 1 - elements 44, 52, 42 and column 4 - lines 54-67 and
column 4 - lines 1-30] ; a' storage processor engine, the storage
processor engine being assigned types of tasks that are
different from the types of tasks assigned to the first and
second processor engines, the storage processor engine being
configured to be coupled to a content storage system [see figure
1 - element 52] ; and a distributed interconnection coupled to
the first, second and third processor engines, the tasks of the
first, second and third processor engines being assigned such

Application/Control Number: 09/87 1,134 Page 1 0

Art Unit: 2182

that the system operates in staged pipeline manner through the
distributed interconnection, wherein at least one of the first
or second processor engines performs system management functions
so as to off-load management functions from the other processor
engines [see figure 1 - elements 36 42 and column 4 - lines 13-
24, 54-67.]

31. Referring to claims 184, Krause teaches wherein the system
performs at least some network endpoint functionality [see
figure 1 - elements 44, 42 and column 9 - lines 23-35.]

32. Referring to claims 187, Krause teaches wherein at least
one of the first, second or storage processor engines comprises
multiple processor modules operating in parallel [see column 10
- lines 40-54 . ]

33. Referring to claims 203, 209, Krause teaches wherein the
system management functions comprise prioritizing data flow
through the system [see column 17 - lines 4-10.]

34. Referring to claims 204, 210, Krause teaches wherein the
system management functions comprise quality of service
functions [see column 12 - lines 31-43.]

35. Referring to claims 205, 211, Krause teaches wherein the
system management functions comprise service level agreement
functions [see column 4 - lines 49-67 and column 15 - lines 41-
67 and column 16 - lines 1-6.]

Application/Control Number: 09/87 1,134 Page
Art Unit: 2182

36. Referring to claims 206, 212, Krause teaches wherein the
system management functions comprise filtering content requests
[see column 4 - lines 49-67 and column 15 - lines 41-67 and
column 16 - lines 1-6.]

37. Referring to claims 207, 213, Krause teaches wherein the
first processor engine is a system management processor engine
that performs the filtering functions [see column 4 - lines 49-
67 and column 15- lines 41-67 and column 16 - lines 1-6.]

38. Referring to claims 208, 214, Krause teaches wherein the
first processor engine is a network interface processor engine
that performs the filtering functions, the network interface
processor engine comprising a network processor [see column 4 -
lines 49-67 and column 15 - lines 41-67 and column 16 - lines 1
6.]

Conclusion

39. The prior art made of record and not relied upon is
considered pertinent to applicant's disclosure. The following
documents have been made record of to further show the state of
the art as it pertains to networked storage devices:

Singhal et al. U.S. Patent Number: 6,658,478
Neal et al. U.S. Patent Number: 6,766,467

Application/Control Number: 09/871,134

Page 12

Art Unit: 2182

Any inquiry concerning this communication or earlier
communications from the examiner should be directed to Niketa I.
Patel whose telephone number is (703) 305 4893. The examiner
can normally be reached on M-F 8:00 A.M. to 5:00 P.M.

If attempts to reach the examiner by telephone are
unsuccessf ul, the examiner's supervisor, Jeffrey A. Gaff in can
be reached on (703) 308 3301. The fax phone number for the
organization where this application or proceeding is assigned is
703-872-9306.

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NP

07/23/2004

/ JEFFREY GAFf#J
SUPERVISORY PATENT EXAMINER
TECHNOLOGY CEMTER 2100